ADMINISTRATIVE PANEL DECISION

Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions

Case No. D2016-2213

1. The Parties

The Respondent is Michael Guthrie, M. Guthrie Building Solutions of Rhoose, the United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Name and Registrar

The disputed domain name <arlarfoods.com> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2016. On November 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2016.

The Center appointed William R. Towns as the sole panelist in this matter on December 2, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a global dairy company and co-operative owned by more than 12,600 dairy farmers in seven countries. According to the Complainant’s 2015 annual report, the Complainant’s worldwide operations generated global revenues of EUR 10.3 billion in 2015, and the Complainant’s UK subsidiary, Arla Foods UK plc, reported turnover in excess of GBP 2 billion.

The Complainant is the owner of trademark registrations for ARLA and ARLA FOODS in various countries. This includes European Union (EUTM) registrations for ARLA and a Danish trademark registration for ARLA FOODS. The earliest of the EUTM registrations (EU001520899) for ARLA was registered on May 7, 2001. The Complainant’s Danish registration for ARLA FOODS (VR 2000 01185) was issued on March 6, 2000. In several decisions UDRP panelists have found that the ARLA trademark has achieved a high level of distinction around the world. See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org,
WIPO Case No. D2012-0875; Arla Foods Amba v. Zhao Ke,
WIPO Case No. DMX2016-0012; Arla Foods Amba v. Graytech Hosting Pty Ltd. ABN 49106229476, Elizabeth Rose,
WIPO Case No. DAU2016-0001; Arla Foods amba v. Ye Li,
WIPO Case No. DME2015-0010. The Complainant also has registered domain names reflecting its marks (e.g., <arla.com>, <arlafoods.com>), which are used with the Complainant’s website.

The disputed domain name was registered on October 12, 2016, according to relevant WhoIs records maintained by the Registrar. On October 13, 2016, the disputed domain name was used to send several emails impersonating an employee of the Complainant to one of the Complainant’s customers in furtherance of a fraudulent scheme. Thereafter, the customer became suspicious and contacted the Complainant, at which time the fraud came to light. The Complainant on October 18, 2016 submitted a phishing report to the Registrar, and consequently the domain name was suspended by the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its ARLA and ARLA FOODS marks, in which the Complainant asserts rights based on registration and use. According to the Complainant, the addition of the letter “r” in the disputed domain name following “arla” does not dispel the confusing similarity of the disputed domain name to the Complainant’s marks. To the contrary, the Complainant asserts that the disputed domain name is phonetically and visually similar to the ARLA mark, and is typical of a typosquatting domain name. The Complainant submits that the generic Top-Level Domain (gTLD) “.com” should be disregarded when considering the confusing similarity of the disputed domain name under the first element of the Policy.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has not been commonly known by the disputed domain name, is not authorized to use the Complainant’s marks, and has not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Complainant observes that the Respondent, without the Complainant’s knowledge or consent, has used the disputed domain name to impersonate an employee of the Complainant (***@alarfoods.com) in order to perpetrate a fraud on one of its customers, obtaining payment of false invoices. The Complainant further notes that the first fraudulent email was sent on October 13, 2016, one day after the disputed domain name was registered.

In view of the foregoing, the Complainant contends that the Respondent registered and has used the disputed domain name in bad faith. The Complainant submits that the Respondent obviously was aware of the Complainant and the Complainant’s rights in the ARLA and ARLA FOODS marks when registering the disputed domain name, as demonstrated by the Respondent’s use of the disputed domain name within a day of its registration in perpetration of a fraudulent scheme directed at customers of the Complainant. The Complainant submits that the Respondent’s use of the disputed domain name in an attempt to exploit and profit from the Complainant’s marks is conclusive of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <arlarfoods.com> is confusingly similar to the Complainant’s ARLA and ARLA FOODS marks, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the Complainant’s mark is clearly recognizable in the disputed domain name. The insertion of an “r” in the disputed domain name between “arla” and “foods” does not dispel the confusing similarity of the disputed domain name to the Complainant’s marks, and is strongly evocative of typosquatting.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The disputed domain name does not resolve to an active website, but there is evidence that the disputed domain name has been used with an email address to impersonate the Complainant in furtherance of a fraudulent scheme directed at the one of the Complaint’s customers.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

It is apparent that the Respondent was aware of the Complainant and the Complainant’s ARLA and ARLA FOODS mark when registering the disputed domain name. The record before the Panel clearly reflects that the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s ARLA and ARLA FOODS marks, with the aim of exploiting and profiting from the Complainant’s marks. The Respondent used the disputed domain name within 24 hours of its registration to impersonate the Complainant and perpetrate a fraud on one of the Complainant’s customers.

Having regard to all of the relevant circumstances in this case, and in the absence of any explanation from the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. There is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent plainly was aware of the Complainant’s marks when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel concludes that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark with the intent to unlawfully profit therefrom. As noted above, the disputed domain name within 24 hours of registration was used by the Respondent in furtherance of an unlawful and fraudulent scheme directed at one of the Complainant’s customers.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <arlarfoods.com> be transferred to the Complainant.